Creative Corner: Will Vermont keep its patent ranking?

Application of 'prior art' determinations is changing

Feb. 27, 2013

Written by

Justin McCabe

Justin McCabe

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Changes to the patent laws that take effect on March 16 will decrease the likelihood that a business or individual who has developed an invention will actually be able to patent it. Although everyone in the country will be in the same boat, Vermont’s patent ranking could take a hit because the ranking is determined on a per capita basis — thus, a reduction of one issued patent in Vermont has a bigger effect on its ratio than one less patent granted in California.

More than a year has gone by since the passage of Sen. Patrick Leahy’s America Invents Act, which set out to improve the U.S. Patent Law system by reducing the patent application backlog, improving patent quality, reducing litigation, and harmonizing the American patent system with foreign patent laws. Among the changes is a transition from our first-to-invent patent system (granting a patent to the first true inventor) to a first-inventor-to-file patent system (granting a patent to the first inventor to file or publicly disclose the invention). Most patent practitioners believe the change will make it more difficult to obtain a patent.

What this means is if your idea is ready for patenting, but you wait to file until after March 16, you will have a more difficult time securing a patent. Under certain situations, it may behoove you to file now.

You should talk to your patent attorney/agent to discuss patenting or other avenues for protecting your idea if:

• The idea ready is for patenting;

• The idea is an important aspect or foundation of your business (or future business);

• There is a lot of activity in the field of the invention (you’ve checked Google patent); or

• It is likely that a competitor is trying to develop a similar product.

The differences

The primary difference between the old and new laws is the application of “prior art” by the United States Patent and Trademark Office (USPTO). Prior art includes, among other things, patents, publications, and publicly known or disclosed apparatus or methods that predate your invention.

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Under the current law, if you invent something today, work diligently on it, and file a patent application in a year, the “date of invention” is the day of your invention, and thus all prior art considered by the USPTO must predate that day of invention.

Under the new law, inventions invented today, but filed in a year, have a date of invention that corresponds with the filing of the patent application for the invention, not the actual day of invention. Consequently, prior art that is developed between the day of invention and the day when the application is filed could be used to reject the application.

In other words, filing after March 16 allows for more prior art to be considered when determining whether you should be entitled to a patent. The law also removes some geographical limitations from what the USPTO could consider as prior art, making even more prior art available to USPTO examiners.. The old law did not consider, for example, sale of an invention in a foreign country to be prior art.

As a slight counterbalance, just after March 16, the USPTO is altering its fee structure — lowering costs for filing patent applications and introducing a “micro-entity” designation that allows for some applicants to reduce their fees by 75 percent. These prices reductions, however, are not a legitimate reason to wait, if you have an idea that’s ready now.